Aldi entitled to injunction against Dunnes, High Court rules

A High Court judge has ruled Aldi is entitled to an injunction restraining Dunnes Stores infringing its trademarks. The exact wording of the injunction will be decided later, Mr Justice Brian Cregan said.

Aldi sought the injunction arising from the judge’s ruling last month that Dunnes engaged in misleading commercial practices in an advertising campaign of 2013 comparing prices of certain products with those of Aldi.

Dunnes is appealing that ruling and had argued no injunction should be granted pending that appeal. It also argued any order might have a “chilling” effect on any future campaigns it might run.

In his judgment today, the judge said he had concluded it was appropriate to grant an injunction preventing Dunnes infringing Aldi’s European Community trade marks. Dunnes had failed to show any special reasons for not granting an injunction under the Community Trade Mark Regulation 2009, he said.

He would grant the injunction for reasons including the unlawful comparative advertisements organised by Dunnes were part of “a calculated and protracted nationwide campaign”.

Dunnes had also displayed a “cavalier” attitude to Aldi’s complaints, including by ignoring its correspondence complaining about the Dunnes’ advertisements, he said.

Such a cavalier attitude towards a breach of a competitor’s trademarks “does not inspire me with any confidence that Dunnes Stores would take sufficient care to ensure that this would not happen again”.

The judge also ruled a hearing to assess damages for Aldi from Dunnes over the infringement should take place after Dunnes appeal if that appeal is unsuccessful. Preparation for the damages hearing should continue in the interim but no trial date would be set pending the outcome of the appeal, he said.

Earlier, giving his reasons for granting the injunction, the judge said there were “numerous infringements” by Dunnes of Aldi’s trademarks in the disputed comparative advertising campaign.

Although Dunnes’ own experts had accepted certain of the products featured were not comparable, despite that, Dunnes maintained a “robust defence” its advertisements did not infringe the Comparative Advertising Regulations, he said.

The infringements of Aldi's trademarks were a serious infringement of an important intellectual property right and the fact it was infringed on so many occasions in so many stores across Ireland illustrated the gravity of the infringements, he said.

The fact Dunnes’ comparative advertising campaign had finished was beside the point, the judge said. It was not the campaign that was at issue but rather the unlawful comparative advertisements by Dunnes.

It was clear from Dunnes’ submissions it intends to continue with comparative advertising campaigns into the future, he said. That was its right but it could not engage in unlawful comparative advertising.

It was also relevant Dunnes had refused to give any undertakings to the court, the judge added. He was concerned, if no injunction was granted, Dunnes, whether accidentally or carelessly, might launch comparative advertising campaigns in the future which would engage in unlawful comparative advertising and thereby infringe the Aldi trademarks.

The judge said he will hear submissions next week on the exact wording of the injunction.

In his judgment last month, Mr Justice Cregan ruled Dunnes infringed consumer protection law and EU regulations in its advertising campaign.

Aldi had claimed, in 2013, Dunnes infringed its trademarks through use of instore shelf labelling and free-standing shop-floor advertising “banners” claiming Dunnes’ prices were cheaper.

The judge found, in relation to pricing labels on Dunnes’ shelves on 14 out of 15 products, the company had infringed EU regulations and Irish law.